Evidence in Opposition Not Evidence on Appeal

The decision of Jessup J in Sherman v Commissioner of Patents [2008] FCA 1026 concerns an appeal from a patent opposition, the Commissioner being a party as a result of the withdrawal of the original opponent. The Commissioner had filed an affidavit exhibiting a citation relied upon for the finding that the claims lacked novelty and inventive step as well as the declaratory evidence filed during the opposition. Sherman, the patent applicant, objected to the admission into evidence of certain aspects of that affidavit, on the basis that they did not satisfy the requirements of the Evidence Act 1995 (Cth).

The Commissioner submitted to the Court that while an appeal from an opposition was a hearing de novo, all material before the Commissioner on the opposition was permitted to be tendered as evidence regardless of restrictions which might otherwise be imposed by the Evidence Act.

Jessup J rejected this contention concluding that a patent opposition appeal proceeding was:

a conventional one in the original jurisdiction of the court, in which the questions which were before the delegate are again in controversy, and must be decided on the evidence that is tendered and admitted here. The admission of that evidence is, in my view, regulated by the Evidence Act in the normal way.

Accordingly, his Honour upheld Sherman’s objections, finding inter alia that the declarations filed during the opposition were inadmissible as hearsay.